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Applying for a Trademark in the European Union

By: Christopher Heer, Annette Latoszewska, Michelle Huong | Last updated: May 28, 2021

Why Apply for a Trademark in the European Union

A registered trademark in Canada only effectively protects your trademark in Canada, its reach does not extend to the European Union (EU) or other foreign jurisdictions. Further, unlike in Canada, there is no common law protection for unregistered trademarks in the EU. This means that registering your trademark in the EU is the only way to protect your brand’s reputation in the EU. If you are conducting business in the EU, an EU trademark is a valuable asset that will grant you exclusive rights to the use of your trademark in the EU (in association with a particular set of goods and services). These are rights you can legally enforce to prevent the dilution of your brand and reputation that results from third party, unauthorized use of your mark.

With over $85 billion (CAD) worth of import and export activity annually, the EU is one of Canada’s largest trading partners and represents a huge potential market for your business. If your current business operations are not in the EU, you may want to start or may already be planning to take your company global - including by expanding into the EU. As part of a sound trademark strategy, you will want to register your mark before expanding your business operations into the region. While Canada’s trademark system operates on a first-to-use basis, the EU follows a first-to-file system. A first-to-file system grants exclusive use of a mark to the first person who files for a trademark application, irrespective of whether that individual or someone else was using the trademark first. As a result, there is a risk that others may register your trademark in the EU before you and profit off your trademark by selling counterfeit goods or by holding your mark hostage. You can protect your brand proactively by registering early for an EU trademark, avoiding potentially expensive legal disputes.

How to File for Trademarks in the European Union

There are four available routes to a registered trademark in the EU, and the option best suited for your business will depend on the current or expected geographic scope of your business. If your business operates in one or two EU member states, you may choose to register your mark in individual member states through the national IP offices in those states. If you are looking to protect your trademark in Belgium, the Netherlands and/or Luxembourg, you may want to register your mark through the Benelux Office of Intellectual Property (BOIP). This is a regional IP office which registers trademarks in each of these three countries. If, however, your business is expansive and spans several EU member states, it may be most beneficial to apply for an EU-wide trademark - either directly through the European Union Intellectual Property Office (EUIPO) or via the Madrid Protocol. For the rest of this article, we’ll focus on this popular avenue for trademark protection.

An EU-wide trademark provides protection in each of the EU member states. If you’re in need of trademark protection in more than two or three EU member states, the cost of an EU-wide trademark ends up being less than that of individual trademarks in each country. Further, a single EU-wide trademark is substantially simpler to maintain than multiple individual marks. Finally, if an EU-wide trademark application is one of several you plan to file now or in the future, you may want to further streamline the process by filing a Madrid application. In short, the Madrid Protocol allows you to file a single trademark application and within that application select multiple jurisdictions in which you’re seeking protection. Each of these offices will then receive and review your application.

What to Consider Before Applying for an EU-Wide Trademark

To ensure that you obtain the greatest benefit from your trademark registration, you’ll want that registration to accurately reflect your trademark and its current and/or future use. Before applying for your trademark, be sure that each of the following statements is true.

  1. You have confirmed that the mark for which you are applying is now and will be representative of your brand for years to come. Note that after you file your trademark application, no amendments to your trademark will be allowed.

  2. You are prepared to put your EU-wide trademark to “genuine use” in the five years following registration. If you do not use your mark within 5 years of registration, third parties may challenge your trademark registration on grounds of non-use and, if this challenge succeeds, your registration may be cancelled.

  3. You can accurately describe the goods and/or services in association with which your mark is or will be used. Your description should be broad enough to capture the growth of your business, but not so broad that you may be unable to use your trademark in association with all of the goods and/or services stated (see #2 above).

  4. You are able to classify your goods and/or services according to the Nice Classification. It is essential to include all relevant classes of goods and/or services as you cannot add additional classes after you submit your trademark application.

Steps to obtaining a EU-Wide Trademark

An EU-wide trademark granted by the EUIPO lasts for ten years and can be renewed indefinitely thereafter in 10-year intervals. An EU-wide trademark may be a word mark, figurative mark, figurative mark containing word elements, shape mark, shape mark containing word elements, position mark, pattern mark, single or combination colour mark, sound mark, motion mark, multimedia mark, or a hologram mark.

Before filing for an EU-wide trademark, it is important to search the EUIPO trademark database for similar marks. Similar marks may be cited against your trademark application and prevent your mark from being allowed to register. Thus, a trademark search can give you a sense of the likelihood of successfully registering your trademark before you sink time and money into preparing and prosecuting a trademark application.

Once your search is complete, you can file for a trademark application using the EasyFiling Form, the Five-Step Form, or the Advanced Form. You may want to use the EasyFiling Form if you have a word or figurative mark. This form is designed to simplify the process for individuals without legal representatives. Goods and/or services are provided in predefined categories, and a virtual assistant guides you through the application. The Five-Step Form is similar to the EasyFiling Form but includes additional trademark types such as shape and sound marks as well as more advanced features including, for example, priority claims. The Advanced Form is useful when you need to customize your list of goods and/or services related to your mark or want to protect marks other than word, figurative, shape, or sound marks. It is tailored for expert users and complex cases.

Once you have filed your trademark application, an EUIPO examiner will communicate any errors therein or raise objections, as applicable. Objections may be based, for example, on your mark lacking distinctiveness, or being too similar to an existing mark or application for a mark. Generally, you will have two months to respond to any deficiencies in your application. Once your trademark application is free of deficiencies, it will be published in the EU Trademark Bulletin. Once published, third parties will have three months to oppose the registration of your mark. Third parties may oppose your application if they think the registration of your mark will infringe their trademark or believe your mark is descriptive of your business, not distinctive, or not clearly represented. If there is no third party opposition after three months, or if any and all oppositions have been successfully resolved, your trademark will be registered and published. After registration, it is important to maintain your trademark by renewing it every 10 years and to monitor the use of your trademark for infringement.

Conclusion

An EU-wide trademark is an important asset that protects the value of your brand whether you are currently doing or plan to do business in the EU. For help crafting an EU trademark protection strategy, or applying for an EU trademark, contact us today for a complimentary and confidential initial telephone appointment.